How do I get and keep a trademark registration?

How long does it take to get my registration?

If you’re already using the trademark when you file the application, and the application is generally acceptable, it will take about 9-12 months to complete the registration. Many things will lengthen this process. Here are some of them:

If you receive an office action, it’ll take longer because you’ll have to respond to the office action and then your response will have to be reviewed by the examiner.

If you’re filing based on “intent to use” instead of “use,” it’ll take longer because you’ll have to show use later on and that filing has to be reviewed and approved.

If there’s someone who believes your registration would infringe on her rights, it’ll take longer if she opposes your application.

What’s the difference between an application based on “use” and one based on “intent to use”?

In order to apply for a trademark registration you must:

be using the trademark in commerce (Section 1(a) or “use”); or

have a genuine intent to use the trademark in commerce (Section 1(b) or “intent to use”).

If you’re already using the trademark, you can file based on use. You have to include a specimen when you file the application showing your use. If you aren’t using the trademark yet, but you intend to use it, you can file based on intent and send the specimen later on.

What’s a specimen? Does it involve a small plastic cup?

A specimen is a picture that shows your product or service with the actual trademark on it. The Trademark Office is especially picky about this.

The stuff in the picture has to be real, not just mocked up so you’ll have something to send to the Trademark Office.

For goods, the specimen has to show the trademark on the actual product or the container or store display.

There's a little more flexibility for the types of specimens that are allowed for services.

Here are some examples of stuff that will and won't work as a specimen.

Trademarks

Acceptable specimens

Unacceptable specimens

Squeegee brand sneakers

A photo of the shoebox for the sneakers with the Squeegee brand on the side.

A photo of the sneakers with the Squeegee brand sewn into the canvas.

A screen shot of the company’s homepage.

An invoice for a sale of the sneakers.

Rosebud brand teleportation services

A photo of a ticket for teleportation from New York to San Francisco showing the Rosebud brand on the ticket.

A screen shot of the Rosebud website page, where a customer can book travel, displaying the Rosebud brand on the page.

A magazine article about the service.

Revulsion brand meatball flavored pancake mix

A photo of the pancake mix box with the Revulsion brand on the box.

A photo of a supermarket endcap display showing the Revulsion brand.

An advertisement for the pancake mix that doesn’t show the box with the trademark visible.

What’s a Statement of Use?

There are trademark applications based on “use” and “intent to use”. No matter which one you file, you will have to show actual use. A “use” application includes evidence of use with the application. An “intent to use” application doesn’t include evidence of use with the application, so it has to be filed later on. That filing is called a “Statement of Use” (or sometimes an amendment to allege use, if it’s filed before review of the application). It includes the dates of first use and a specimen.

What happens if my Statement of Use is due, but I haven’t started using my trademark yet?

If the deadline for your Statement of Use is coming up and you haven’t started using your trademark yet, you can request a 6-month extension. If your application covers more than one international class, and you’re using the trademark in some of the classes, but not all of them, you can request that the Trademark Office divide your application, file a Statement of Use for the classes in which you can show use, and then request an extension for the others.

Assuming you continue to make efforts toward using your trademark, the Trademark Office will usually grant up to five 6-month extensions.

What’s a drawing?

If your trademark includes a logo or has the letters or numbers in a special font, you have to send a “drawing”, which is an image file showing the logo and/or the special font. This is different from a specimen. A drawing doesn’t show use of the trademark, it just serves as a record for what the trademark is.

What’s a disclaimer?

A disclaimer is a statement made by the owner of a trademark that says: “Although I own this trademark, I don’t have the right to stop others from using this particular word or group of words.” For example: KFC Corporation owns registration 0815167 for: Kentucky Fried Chicken® as a brand for restaurant services. That registration includes this disclaimer: “The words ‘fried chicken’ are disclaimed apart from the mark as shown.” That means that no one else can use the complete phrase “Kentucky Fried Chicken” in connection with restaurant services, but they can use “fried chicken” all day long.

How long does a trademark registration last?

A registration lasts for as long as you continue to use the trademark in commerce and maintain the registration with the Trademark Office (unless someone challenges it and brings an action to deregister it or your trademark commits genericide).

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